Patent Reform 2011: ‘America Invents Act’ Legal Analysis & Updates

iStock_000006581839XSmall.jpgOn September 8, 2011, the United States Senate passed the America Invents Act. The much debated Patent Reform bill is now on its way to President Obama for his signature.

From law firms on JD Supra:

Congress Passes America Invents Act (Morgan Lewis):
“After years of debating the need for patent reform, Congress has acted.
Today, the Senate passed the House version of the “America Invents Act”
(the Act). The bill will now go to the President, who is expected to
sign it into law almost immediately. The Act represents the most
sweeping overhaul of U.S. patent law in almost 60 years and will effect
dramatic changes in a number of key areas. Below is a summary of a few
key provisions…” Read update>>

First-to-File or First-to-Invent? New Patent Reform Act Changes the Game (Sutherland):
“This landmark piece of legislation fundamentally changes the U.S. patent
system by awarding patents to the first inventor to file an application
with the U.S. Patent and Trademark Office (USPTO). Thus, in order to
stay competitive, inventors of all sizes will need to file patent
applications quickly and frequently in order to stay a step ahead of
their competition. Moreover, the Act provides for additional third-party
input during both the pre- and post-issuance phases of the patent
process. These provisions require entities to monitor published
applications and newly issued patents more closely in order to take
swift action in accordance with the new processes…” Read update>>

Patent Reform Now One Signature Away: Senate Sends Historic Bill to President’s Desk (Bracewell & Giuliani):
“If signed into law, the America Invents Act would transition the U.S.
Patent system from a first-to-invent system to a first-inventor-to-file
system. The first-inventor-to-file system would give inventorship
priority to the first individual inventor to file a patent application
for a particular invention. That system follows the procedures already
in place in Europe but would contrast sharply with the U.S.’s current
system, which gives priority to the first inventor in some circumstances
even if that inventor is not the first to file an application with the
USPTO…” Read update>>

Ten Things You Should Know About Patent Reform (Lane Powell):
“The law is designed to encourage investment in leading edge technology
and spur the formation and growth of existing and new enterprises.
Changes in the law encompass “first to file” priority for inventions,
methods to block the granting of a patent, streamlined challenges to
existing patents, modified aspects of lengthy and expensive patent
infringement disputes to specialized administrative tribunals, and other
issues. Below is an easy-to-follow ‘top 10 list’ of what you need to
know about the new law…” Read update>>

The America Invents Act: A Race to the Patent Office (Warner Norcross & Judd):
“…In contrast, Senator Maria Cantwell described the Act as a ‘big
corporation patent giveaway that tramples on the rights of small
inventors.’ Similarly, the advocacy group American Innovators for Patent
Reform (AIPR) said the Act would ‘stifle innovation in the U.S.’ and
that it was “bought and paid for by large corporations which see being
forced to pay royalties for technology invented by others as an unfair
business practice.” Read update>>

Patent Prosecution Strategies Under the Smith-Leahy America Invents Act (Schnader):
“The “first-to-file” rule makes it imperative that all inventors are
aware of the importance of filing patent applications early, and are
diligent in doing so. An invention does not need to be reduced to
practice before an application for patent is filed; consider using a
preliminary “short-form” invention disclosure document to encourage and
allow inventors to quickly put decision makers on notice of the
development of innovative technology…” Read update>>

We’ve been compiling Patent Reform legal reading lists of relevant analysis and updates. Check back; we’ll release additional roundups as new work is posted. In the meantime, for your reference:

The Bill>>

America Invests Act (Full Text Copy) – Patent Reform Bill H.R. 1249

The Roundups>>

Patent Reform: 8 Things to Know About the America Invents Act
9/13: As we wait for President Obama’s signature, eight preliminary things you need to know about this historic patent reform legislation…

America Invents Act: A Patent Reform Primer For The Rest Of Us
A roundup of recent law firm updates explaining the implications of the Patent Reform bill in its most simple form. An introductory primer…

America Invents Act: Friday Five Look at Patent Law Reform
A recent roundup, explaining the impending patent reforms in five quick bytes, with accompanying legal updates…

Patent Reform 2011 Reading List: ‘America Invents Act’ Passes House
A roundup of law firm commentary and updates after the Patent Reform bill passed the House earlier this summer…

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